WIPO Case D2019-2732

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pfizer Inc. v. DOMAIN MAYBE FOR SALE c/o Dynadot

Case No. D2019-2732

1. The Parties

Complainant is Pfizer Inc., United States of America (“United States”), represented by SILKA Law AB, Sweden.

Respondent is DOMAIN MAYBE FOR SALE c/o Dynadot, United States.

2. The Domain Name and Registrar

The disputed domain name <pfizerdigitalcompanion.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2019.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 13, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, Pfizer Inc., is a research-based biopharmaceutical company with operations in a number of countries around the world. Complainant develops, manufactures and markets prescription medicines and vaccines. Complainant owns and uses the name and mark PFIZER for its services and owns a number of trademark registrations for the PFIZER mark in connection with its services in many countries around world, including the United States. Of relevance to this proceeding, Complainant owns several trademark registrations in the United States for the PFIZER mark, the earliest of which issued to registration on May 1, 1956 (Registration No. 626088), and a pending trademark application for the mark PFIZER DIGITAL COMPANION, which was filed on January 24, 2019 (Application No. 88/275676).

Complainant also owns and uses the domain name <pfizer.com> in connection with a website that provides information about Complainant and its products, and for email accounts for Complainant’s employees. Complainant registered the <pfizer.com> domain name in 1992.

Respondent, whose actual identity is unknown, registered the disputed domain name on January 28, 2019. Respondent has used, and currently uses, the disputed domain name as a redirect to a web page at <dan.com> which offers the disputed domain name for sale for a price of USD 988.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has strong rights in the PFIZER mark on account of its use of the PFIZER name and mark for over 150 years and by virtue of its numerous trademark registrations for the PFIZER mark in the United States and around the world. Complainant also contends that the PFIZER mark is well known and that numerous prior UDRP decisions have recognized Complainant’s well-established rights in the PFIZER name and mark.

Complainant asserts that the disputed domain name is identical or confusingly similar to Complainant’s PFIZER mark as it fully incorporates the PFIZER mark with the words “digital” and “companion” that relate to the subject matter of Complainant’s PFIZER DIGITAL COMPANION mark.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) cannot be making a bona fide offering of services, given that the disputed domain name incorporates Complainant’s PFIZER trademark, (ii) is not commonly known by the name “Pfizer,” and (iii) opportunistically registered the disputed domain name shortly after Complainant filed a trademark application for the mark PFIZER DIGITAL COMPANION in the United States, and then offered the disputed domain name for sale.

Lastly, Complainant contends that Respondent registered and has used the disputed domain name in bad faith given that Respondent used a privacy service in order to make it more difficult for Complainant to identify Respondent and to mask Respondent’s bad faith attempt to sell the disputed domain name for profit. Complainant further contends that Respondent’s bad faith is established by the fact that Respondent registered the disputed domain name four days after Complainant filed a trademark application in the United States to register the mark PFIZER DIGITAL COMPANION. Complainant argues that the timing of the registration of the disputed domain name is no coincidence but is clear evidence that Respondent targeted Complainant and its trademarks. Finally, Complainant asserts that Respondent has an established pattern of registering in bad faith domain names incorporating well-known third party trademarks.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD,
WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the PFIZER mark in connection with its pharmaceutical products and services. Complainant has also provided evidence that it owns numerous trademark registrations for the PFIZER mark in the United States, where Respondent is located, well before Respondent registered the disputed domain name.

With Complainant’s rights in the PFIZER mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,
WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally UDRP panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s PFIZER mark as it incorporates the PFIZER mark in its entirety at the head of the disputed domain name. The addition of the common words “digital” and “companion” does not distinguish the disputed domain name and is simply descriptive material that is added on to PFIZER, the dominant component of the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s PFIZER mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,
WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the evidence submitted in this proceeding, it appears that Respondent has only used the disputed domain name as a redirect to a webpage within the website at <dan.com> for purposes of offering the disputed domain name for sale. Given that Respondent registered the disputed domain name four days after Complainant filed a trademark application in the United States to register the mark PFIZER DIGITAL COMPANION and thereafter attempted to sell the disputed domain name suggests that Respondent did so for profit and not for some bona fide use or legitimate interest.

Given that Complainant has established with sufficient evidence that it owns rights in the PFIZER mark, and given Respondent’s above noted actions and failure to appear in this matter, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

Given Respondent’s actions as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s registration and immediate attempt to sell the disputed domain name which consists of Complainant’s PFIZER mark, and which appears to have been based on Complainant’s application for PFIZER DIGITAL COMPANION trademark, has been done in bad faith. Given that Complainant had established rights in the PFIZER name and mark prior to when Respondent registered the disputed domain name, it is evident that Respondent opportunistically registered and used the disputed domain name for purposes of profit at the expense of Complainant and its rights in the PFIZER mark. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pfizerdigitalcompanion.com> be transferred to Complainant.